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Trademark laws and regulations in India are a combination of domestic laws and international treaties, including Madrid Protocol and Agreement. Brand owners can register their trademarks in India by filing trademark applications after conducting brand clearance searches in the relevant classes of goods and services. International brand owners can also obtain trademark protection in India by using international treaty governed by WIPO under Madrid Protocol.

Trademark Searching

Conducting a trademark search is important to know if the mark is already in use by a third party. The mark which you wish to protect may already have been registered or the rights to use that mark may already have been assigned. Furthermore, if the search results reveal that the mark is already registered, the investment in trademark search would save various costs, including the trademark filing fees. The search conducted by our team is an exact match search for the mark or logo in the particular class of goods.

Trademark Filing

On behalf of our clients, we prepare and file trademark applications in India. With our established network of trademark attorneys across the world, we assist our clients in international registration of their marks in multiple jurisdictions.

Trademark Prosecution & Licensing

Trademark prosecution in India includes filing a trademark application with the Indian Trademark Office (“IPO”) and arguing against any Examination Report (Office Action) received from the Registrar of Trademarks. The trademark prosecution process begins when an application for a trademark registration is filed either claiming prior usage (to be filed with affidavit of use with evidence), or, a proposed to be used trademark application.

We believe registering a trademark serves as a launch pad for a business. Our team provides all prosecution services necessary for registration of a mark, including filing applications, responding to office actions, recording assignments and maintaining registration. Our team prepares and analyses Trademark Licensing Documentation considering the quality control needs of our clients.

Trademark Law Case Study

It is well known that the acronym “WWF” was coined in 1980 when Vince MacMohan Jr. established the company Titan Sports. Since then, WWF, or “World Wrestling Federation” became a leading brand name in the field of wrestling worldwide.

In 2001, WWF officially got rebranded as WWE, or “World Wrestling Entertainment”, primarily due to legal reasons. The legal battle was fought between WWF (World Wide Fund) and WWF (World Wrestling Federation), and a London court ruled against the wrestling brand. Even after challenging the ruling, wrestling body could not succeed and subsequently, WWF was rebranded as WWE.

As a PR move, WWE even used “Get The ‘F’ Out” as marketing slogan.

This case study highlights the importance of trademark laws for business growth and appropriate steps must be taken by the brand owners to protect their brand, without infringing upon third party rights. Henceforth, trademark due diligence is extremely crucial for brand owners.

Trademark Due Diligence

Our team of specialized trademark attorneys is capable of performing extensive Due Diligence for the purposes of Trademark Litigation in various jurisdictions, or for the purposes of Mergers and Acquisitions, and the like.

Get Trademark Registered in India by hiring professional trademark lawyer in India. Currently, pendency in trademark examination of brand application filed for the registration of a trademark has been brought to less than a month. Trademark filed in late December, 2016 and trademark application filed in January 2017 are already in process of trademark examination. Recently, our client’s trademark has been Advertised before Acceptance in less than 3 weeks from trademark filing date.

So, by following the ten step process get Trademark Registered in India in 30 days.

Attach Stamped Power of Attorney (POA) while filing the trademark in India

Wait for formal response from trademark office and reply trademark objection within one month of receiving the formal response

Attention All Trademark Owners who filed Trademark applications in India

According to trademark notice issued by Trade Marks Registry in India, it has identified many trademark applications filed before December 2016 failed at 1st stage of formality check pass. Therefore, those trademark applications have not been examined in India due to compliance issues.

The list of filed Trademark applications has been published as follows:

Annexure I: Incomplete digitization of the filed Trademark

Annexure II: Trademark applications failed in formality check during examination and have been pending for compliance with the office direction.

The Trade Marks Registry in India has directed the trademark attorneys and brand agents to comply with the pending issues for the trademark applications that have failed in Formality check. As a trademark owner you should check if your brand is in this list. Refer the details of trademark filing deficiency and requirement raised by the trademark office. The trademark applicants should email at pendingexam.tmr@nic.in, with brief details of such brand applications to remove existing objection and comply with the same.

Example of Trademark compliance issue in India

While taking up the above application for examination under the provisions of Trade Mark Act, 1999 and Trade Marks Rules 2002, it is observed that trademark application could not proceed to examination because of the following reason/s:

* Power of Attorney (TM-48) is not found enclosed along with the trademark application.

* You are required to provide TM-48 with necessary stamp duty..

Therefore, trademark applicants and their trademark agents should include the following details while mailing at pendingexam.tmr@nic.in and and send the hard copy to the concerned office of Trade Marks Registry:

Full and complete Reference Letter No. and date,

Trademark application number and the class to which it relates.

[youtube https://www.youtube.com/watch?v=ClSn6iMxMAc&w=560&h=315] As strategic patent counsel, we work with clients in aligning the patent prosecution process with client’s core business strategies, in addition to drafting patent claims, patent application preparation and prosecution focused on securing patents, determining freedom-to-operate rights, and analysing validity of granted patents.

We serve as patent prosecution attorney for clients across a wide range of sectors, including, computer software, mobile applications, aeronautics, automobiles, internet of things, robotics, artificial intelligence, blockchain, cryptocurrency and drones, as well as manufacturers. In life science category, clients range from healthcare, biotechnology, pharmaceutical, energy and environmental industries.

As patent attorney with expertise in software patents and mobile app patents along with Internet of Things (IoT), we regularly advise clients to embody business methods as technology patents because a business method patent can serve as a powerful asset for companies to leverage their intellectual property assets. At the beginning of the patent process, we determine the patentability, scope and enforceability of the innovate process and product. Patent attorney also works with clients in securing patents for clean technology sector, including, green technology inventions, energy generation, conservation, renewable energy inventions, etc.

Patent attorneys generally possess dual qualification in technology and law, mostly with advanced degrees in technical fields such as pharmaceuticals, mathematics, chemistry, biochemistry, genetics and aeronautics. At Law Office of Rahul Dev — Tech Corp Law Group, we assist clients as a team of professionals having prior work experience in technical fields such as engineering and manufacturing, aerospace, robotics, plastics, computer software, biochemistry, molecular biology and neuroscience. Our core patent services include, patent research, patent analytics, patent searching, patent prosecution, non-infringement and freedom to operate opinions, technology transactions and licensing, as well as alternate dispute resolution and commercial litigation.

As licensed patent attorney, we represent clients during the entire patent registration process in India, including filing of patent applications and trademark applications. We advise clients regarding duration of a patent and a trademark, patent and trademark renewals, patent filing forms, patent filing fee, trademark filing forms, trademark filing fee, protecting process and product both by patents, protecting brand and logo both by trademarks, analysing patent portfolio for strength and weaknesses, etc.

Rahul Dev, Patent attorney in India, has conducted sessions for clients to convey the message that patent provides a strong protection for innovations, and having patent rights in India can help in resolving patent-related problems in addition to protection of intellectual property rights.

We work with clients to formulate a long-term patent strategy to protect the patentable inventions, drafting of patent applications, filing patent applications in India, initiating legal actions against patent infringing parties, along with developing custom-tailored solutions to complex patent and legal matters.

Law Office of Patent Attorney Rahul Dev provides comprehensive solutions to all intellectual property needs of clients, including patent filing services in India. We operate as a close network of patent attorneys, patent agents and patent lawyers enrolled with Indian patent office and bar councils in India.

The Madrid Protocol is a WIPO administered treaty to simplify the process of filing trademarks across multiple jurisdictions

Trademark applications can be filed in India under the Madrid Protocol when India is either the origin country or the designated country

If India is the origin country, the Indian Trademarks Registry (TMR) will receive the applications for international registrations of trademark

If India is the designated country, the international trademark application is filed with WIPO selecting India as the designated country

Replying to Provisional refusal in India under Madrid Protocol

International Trademarks and Brand Protection

Provisional refusal in India under Madrid Protocol Services

Provisional refusal in India under Madrid Protocol: Although, it is not possible to register a particular brand as “International Trademark”, the Madrid Protocol system provides an easy solution to the companies and individuals if the country in which they want to register their trademark has signed up the Madrid Protocol.

India signed up for Madrid Protocol With WIPO in the year 2013. Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications worldwide.

How Madrid Protocol Trademark System Works in Favour of Brand & Trademark Owners

It can be used to file and register the trademark in the home country, for example, resident of India will file trademark in India first and subsequently be able to secure wider trademark protection globally. Once the Indian trademark application is filed before the Indian Trademark Office, one can extend the trademark registration in other countries by using a single trademark application. The details of the single trademark application should include desired countries in which you want to seek trademark protection.

Overall costs for filing trademark under Madrid protocol will depend on the applicable official government fees of the designated countries in which you are applying to register your trademark brand, and the number of trademark classes.

Filing International Trademark Applications Under Madrid Protocol With WIPO – Procedure, Cost and Requirements for Indian Trademarks

Madrid Agreement and Madrid Protocol – Governing Treaties

The treaties provide an easy and cost effective way of filing international trademarks. Once the trademarks are registered by respective designated offices, the Madrid protocol further provides simple procedures to manage international registrations.

Provisional refusal in India under Madrid Protocol: Office of Origin

The trademark office that receives application under Madrid protocol is known as office of origin.

Usually, once the international trademark application is filed with designation of countries with the office of origin, the contents of said application are verified by said office of origin. Once done, the application is forwarded to WIPO, which is then published by WIPO and subsequently, WIPO notifies all the designated offices. Thereafter, each designated office examines the trademark application as per respective trademark laws, rules and procedures.

Madrid Trademark Application in India

The Indian Trademark Office is authorized to receive an international trademark application under Madrid Protocol.

Madrid Trademark Application in India – Requirements

The basic criteria to file Madrid Trademark Application in India requires applicant to be eligible to file said trademark application, which essentially requires the applicant to be an Indian national or having a place of business in India. In addition, the Indian trademark office requires an existing trademark application, known as the basic application, and designation of one or more countries wherein international trademark protection is required.

Documents Required for Filing Trademarks in India

The Indian Trademark Office requires an international trademark application under Madrid Protocol to be accompanied by an application form, power of attorney, payment of handling fee, and payment of international designation fee (in Swiss Francs) payable to WIPO.

Madrid Trademark Application – Role of Office of Origin

During the process of receiving an application for international trademark registration under Madrid System, the office of origin plays an important role. After receiving the application, the office of origin verifies the contents, certifies the application and forwards it to WIPO for publication and notification to designated offices. Subsequently, the office of origin receives details of irregularities in the application, if any, and further communicates with WIPO regarding status of basic trademark application.

Responding to Provisional Refusal from the Indian Trademark Office under Madrid Protocol

The Indian Trademark Office examines every international trademark registration designating India received from the International Bureau of WIPO. An International Registration Designating India (IRDI) number is allotted by the Trade Marks Registry to every International Registration in which India has been designated. The trademark examiner examines the Brand trademark on the ground of non-distinctiveness and similarities to registered trademarks and pending trademarks before the Indian Trademark Registry.

While examining the trademark application, if there is any objection for protection of such trademark registration in India, a provisional refusal is notified to the International Bureau of WIPO within 18 months from the date the international registration was notified to India.

General objections raised by Trademark Registry in India | Trademark Objections under Provisional Refusal In India

9(1){a) under Indian Trademark Law- The objection is raised under S 9(1) (a) of the Trade Marks Act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the services of one person from those of others., 11(1) under Indian Trademark Law – The objection is raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.

The provisional refusal includes an Examination Report containing objections. The International Bureau records the provisional refusal in the international register and provides the details of such provisional refusal to the trademark applicant of the international registration.

The provisional refusal is recorded in the International Register, together with an indication of the date on which the notification was sent. The provisional refusal is also published in the WIPO Gazette, with an indication as to whether the refusal is total (i.e. relates to all the goods and services covered by the designation) or partial (i.e., relates to only some of those goods and and services covered)

Responding to Provisional Refusal Issued by the Indian Trademark Office under the Madrid Protocol

The trademark applicant can respond to the provisional refusal by engaging a trademark agent or an Indian trademark attorney having address in India by executing a Power of Attorney in the favour of the agent/attorney.

Follow the Deadline Dates | Trademark Response Deadline to Respond to the Objections:

The normal deadline to respond to trademark objections raised by the Indian Trademark Office is 1 month from the date of receipt of the provisional refusal notification by the trademark applicant. Technically, once the trademark applicant receives the provisional refusal notification from the International Bureau of WIPO the last date to respond to provisional refusal can be calculated.

Note: If you have opted to receive notifications from the International Bureau of WIPO by paper mail, it is advisable to retain the postal receipt. So, if there is a delay by the post the date of receipt of the provisional refusal from WIPO, the postal receipt will act as documentary evidence.

What to do if you miss the deadline / extension of timeline to respond to trademark objections raised by the Indian Trademark Office?

The Indian trademark attorney can file an application for extension of time and the same is at the discretion of the trademark office. The Trade Marks Registry (TMR) office of India then considers the response of the trademark applicant of the international registration and may either confirm the refusal or move for advertisement of the international registration in the Trade Marks Journal.

Amending detailed description of different trademark goods/services:

Any amendments in goods/services in respect of the Indian trademark application needs to be made only at the International Bureau of WIPO and the same needs to be notified to the Indian Trademark Office by the International Bureau of WIPO.

Relevant legal provisions in Indian Trademark Law for International Trademark Applications Filed under Madrid Protocol

Section 36E (2) of the Trade Marks Act 1999

Rule 67H of the Trade Marks Rules 2002

Articles 4 & 5 of the Madrid Protocol

Rules 17, 18 & 18ter of the Common Regulations

A new interpretation/definition clause has been inserted in accordance with the Madrid Protocol in Indian Trademark Law (S.36B read with Rule 67A).

Applicant or registered proprietor of trademark under section 18 or under section 23 (‘basic application’ or ‘basic registration’) of the Act may make an international application in Form MM2 (E) along with prescribed fees in Swiss francs.

The Registrar shall certify & forward it to the International Bureau within two months from the date of receipt of the said application & for this, a fee of INR 2000 is payable to the Registrar towards handling charges (S. 36D read with Rule 67E & 67F).

A separate record for international registration where India has been designated shall be kept by the Registrar called the ‘Record of Particulars of International Registration (S. 36E read with Rule 67G).

For a period of five years from the date of an international registration, if the initial basic national application/registration ceases to have effect, through a withdrawal, refusal, cancellation following a decision of the Office of origin, or Court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected. After the expiry of a period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application (S.36D & S.36E). Provided that, where an appeal is made against the decision of registration nd an action requesting withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting in withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration. (Provision of Sub-section 5 of Section 36D). The Registrar shall examine the application within 2 months where India has been designated. If grounds for objection are found during the examination by the Registrar, or if an opposition is filed, the Registrar can declare a provisional refusal (within 18 months of receipt of the application’s notification from the International Bureau for India) for protection of the mark in that member country (S.36E read with Rule 67H).

The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period and subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration (s. 36G).